Citations
- 895 F. Supp. 1230
Full opinion text
TABLE OF CONTENTS
I. BACKGROUND.1236
II. STANDARDS FOR SUMMARY JUDGMENT.1238
III. FINDINGS OF FACT.1240
A. Undisputed Facts.1240
B. Disputed Facts.1243
IV. LEGAL ANALYSIS.1246
A. Invalidity.1246
1. Enablement and definiteness.1246
a. Enablement.1247
b. Definiteness.1251
2. Prior art.1255
a. Anticipation.1255
b. Obviousness.1259
i. Scope and content of prior art.1260
ii. Level of ordinary skill in the art.1262
iii. Objective evidence of nonobviousness.1262
iv. Differences between the prior art and claimed invention-1263
B. Infringement.1266
1. Literal infringement.1267
a. Claim construction.1267
b. Determination of whether the claims “read” on the accused device.... 1271
2. Infringement under the “doctrine of equivalents”.1272
V. CONCLUSION.1277
MEMORANDUM OPINION AND ORDER REGARDING THE PARTIES’ CROSS-MOTIONS FOR SUMMARY JUDGMENT
BENNETT, District Judge.
At its nub, this patent litigation is about a method to make a specific type of rock crusher crush more rock in less time. In this lawsuit for declaratory judgment concerning the validity and infringement of a patent, the parties have filed cross motions for summary judgment on essentially the same issues, albeit from different perspectives. The patent in suit is for a method to increase the performance of “a conical crusher,” which is an apparatus that crushes rock for a variety of commercial purposes, including asphalt paving. Both parties argue the validity, or invalidity, of the patent in terms of “enablement” and “definiteness,” pursuant to 35 U.S.C. § 112, and in terms of “anticipation” and “obviousness” under the prior art, pursuant to 35 U.S.C. §§ 102(a) and 103, respectively. Both also argue infringement, or non-infringement, under theories of literal infringement and “doctrine of equivalents” infringement. In addition, the plaintiff has moved to bifurcate trial of the liability and damages issues.
I. BACKGROUND
This lawsuit for declaratory judgment was filed in the United States District Court for the District of Oregon on March 15, 1993. The Oregon court, however, ordered transfer of the lawsuit to the Northern District of Iowa on April 2,1993. In this lawsuit, plaintiff Cedarapids, Inc., seeks declaration that it is not infringing U.S. Patent No. 4,697,745 (hereinafter, the “’745 patent”), which is owned by defendant Nordberg, Inc., and further declaration that the ’745 patent is invalid on several grounds. On May 17, 1993, Nordberg filed a counterclaim alleging that Cedarapids is infringing the ’745 patent. The ’745 patent is for a “high performance conical crusher,” which is a device used to crush rock, mineral ores, and other hard materials into products more readily usable for commercial purposes or for further processing. Nordberg asserts that the ’745 patent is for an optimal interrelationship of “speed” and “throw,” two aspects of crusher performance, resulting in increased efficiency and output without increasing the size of the crusher chamber. Nordberg claims to have incorporated the ’745 patent into its HP300 conical crusher. Cedarapids has developed an allegedly infringing product called a Roll-ercone II.
This case was reassigned to the undersigned on May 10, 1995. It is currently before the court on the following matters: (1) Cedarapids’ February 14, 1994, motion for summary judgment (docket no. 23), which was resisted on March 18, 1994; (2) Cedara-pids’ March 1, 1995, motion to bifurcate trial of liability and damages (docket number 49), which was resisted on March 20, 1995; and (3) Nordberg’s April 17, 1995, motion for summary judgment on counterclaim (docket number 55), which was resisted on May 15, 1995.
The court held oral arguments on the motions on July 31, 1995. Plaintiff Cedarapids was represented by counsel Stephen J. Holt-man and Donald R. Schoonover of Simmons, Perrine, Albright & Ellwood, L.L.P., of Cedar Rapids, Iowa. Tim Kennedy, General Counsel for Cedarapids, Inc., was also present, but took no part in the proceedings and did not enter an appearance. Defendant Nordberg was represented by counsel Lawrence J. Crain and Roger D. Greer of Greer, Burns & Crain, Ltd., of Chicago, Illinois.
The court’s disposition of the cross-motions for summary judgment, of course, has significant implications for the motion to bifurcate trial. If the entire matter is disposed of on summary judgment, the motion to bifurcate trial will obviously be mooted. Disposition of the summary judgment motions might, on the other hand, require a trial on damages only, or a trial on both liability and damages. The court therefore turns first to the cross-motions for summary judgment.
Cedarapids’s motion for summary judgment was filed February 14, 1994. In its motion, Cedarapids asserts that Nordberg has conceded the only facts necessary to grant Cedarapids’s motion, and consequently to deny Nordberg’s cross-motion for summary judgment. Cedarapids points to Nord-berg’s concession that “it was well known in the crusher industry that variations in crusher speed, throw, power draw, crusher setting, feed size, feed type, ambient operational temperature, among other factors, could influence crusher productivity in tons per hour_” Thus, Cedarapids argues, Nord-berg has conceded the obviousness of the alleged “invention” embodied in the ’745 patent.
More specifically, Cedarapids asserts that the supposedly patentable aspect of the ’745 patent was anticipated, pursuant to 35 U.S.C. § 102(a), by any one of four prior art references. Cedarapids contends that even if no one prior art reference anticipated the ’745 patent, the prior art as a whole demonstrates the “obviousness” of the ’745 patent, and the patent is therefore invalid pursuant to 35 U.S.C. § 103. Cedarapids also contends that the patent is invalid pursuant to 35 U.S.C. § 112, because it is insufficiently specific for persons familiar with the art to make and use the claimed invention from the patent without undue experimentation, an argument based on “enablement,” as well as because it is too “indefinite” as to what constitutes the alleged invention. Cedarapids’s enablement argument is essentially that the claimed invention does not specify the increases in speed and throw necessary to obtain the optimal performance. Its definiteness argument is that it is unclear whether the ’745 patent pertains to a retrofit, redesign, or replacement of an existing crusher, and thus it is unclear what conduct would be infringing. Cedarapids contends that the plain meaning of the first claim of the ’745 patent is that it pertains only to a retrofit situation. Hence, Cedarapids argues that, if the patent is valid, Cedarapids is not infringing the patent, because its allegedly accused device is not a retrofit of an existing crusher using the method defined in the ’745 patent, but a newly-designed device.
Nordberg’s resistance to Cedarapids’s motion for summary judgment and its own cross-motion for summary judgment assert the validity of the ’745 patent and Cedara-pids’s infringement of that patent. Nord-berg asserts that there are genuine issues of material fact as to infringement and validity in its resistance to Cedarapids’s motion for summary judgment. However, in its own motion for summary judgment, Nordberg asserts that as a matter of law its invention was not “obvious.” Nordberg attacks Cedar-apids’s assertion that the so-called “Sawant Paper,” by one of the co-inventors of Nord-berg’s crusher, concedes the obviousness of the invention. Rather, Nordberg argues that this paper identifies the variables for improved performance of crushers, but only the invention itself attained the optimal combination of variables. Nordberg asserts that Ce-darapids’s own witnesses asserted that the invention was not obvious, because they had to conduct extensive tests to verify the accuracy of the patent’s statement of the effects of specified changes to “speed” and “throw.” Nordberg also asserts that its ’745 patent has not been anticipated by any prior art. As to infringement, Nordberg argues that Cedara-pids’s Rollercone II is sufficiently like its own invention in various, specified aspects to constitute an infringing product under the “doctrine of equivalents.”
II. STANDARDS FOR SUMMARY JUDGMENT
Because the parties have filed cross-motions for summary judgment, the court turns first to the standards applicable to disposition of such motions. “Summary judgment is appropriate in a patent case, as in other cases....” Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994); Conroy v. Reebok Int’l, Ltd., 14 F.3d 1570, 1575 (Fed.Cir.1994) (“The grant of summary judgment [in a patent case] is appropriate where the standards set forth in Rule 56(c) are satisfied.”); Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1190 (Fed.Cir.1993); Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1265 (Fed.Cir.1991) (“Summary judgment is as available in patent cases as in other areas of litigation.”); Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 795 (Fed.Cir.1990) (“As in other cases, the grant of summary judgment under Fed.R.Civ.P. 56, is appropriate in a patent case where no genuine issue of material fact exists and the movant is entitled to judgment as a matter of law.”) (footnote omitted); C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed.Cir.1990); Johnston v. IVAC Corp., 885 F.2d 1574, 1576 (Fed.Cir.1989); Avia Group Int’l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988); Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir.1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir.1983).
The Supreme Court has established that a summary judgment motion should be interpreted by the trial court to accomplish its purpose of disposing of factually unsupported claims, and the trial judge’s function is not to weigh the evidence and determine the truth of the matter, but to determine whether there is a genuine issue for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 1355-56, 89 L.Ed.2d 538 (1986); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1560 (Fed.Cir.1995) (“The purpose of summary judgment is to avoid an unnecessary trial, by enabling an expeditious procedure whereby, for issues on which there is no material factual dispute, the court can decide the controversy by applying the law to the undisputed facts,” citing Anderson, 477 U.S. at 252, 106 S.Ct. at 2512); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1265 (Fed.Cir.1991). Rule 56 “is a vehicle for the convenience of the parties and courts, for use when the circumstances warrant; but is not a substitute for trial when decision of the controversy requires resolution of disputed factual issues.” Glaverbel, 45 F.3d at 1560 (citing Celotex, 477 U.S. at 327, 106 S.Ct. at 2555).
The standard for granting summary judgment is well established. Rule 56 of the Federal Rules of Civil Procedure states in pertinent part:
Rule 56. Summary Judgment
(a) For Claimant. A party seeking to recover upon a claim, counterclaim, or cross-claim or to obtain a declaratory judgment may, at any time after the expiration of 20 days from the commencement of the action or after service of a motion for summary judgment by the adverse party, move with or without supporting affidavits for a summary judgment in the party’s favor upon all or any part thereof.
(b) For Defending Party. A party against whom a claim ... is asserted ... may, at any time, move for summary judgment in the party’s favor as to all or any part thereof.
(c) Motions and Proceedings Thereon. The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.
Fed.R.Civ.P. 56(b) & (c) (emphasis added); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986); Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274 (Fed.Cir.1995); Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1536 (Fed.Cir.1995). Thus, in a patent case, in order for the court to grant summary judgment, “there must ... be no genuine issue of material fact, the burden of proof of an issue must be correctly allocated, and all pertinent factors must be considered.” Gasser Chair Co., Inc. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 773 (Fed.Cir.1995) (quoting A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1039 (Fed.Cir.1992)); Nike, Inc., 43 F.3d at 646 (“Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law.”).
A court considering a motion for summary judgment must view all the facts in the light most favorable to the nonmoving party, and give the non-movant the benefit of all reasonable inferences that can be drawn from the facts. Anderson, 477 U.S. at 255, 106 S.Ct. at 2513; Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986) (quoting United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962)); Gasser Chair, 60 F.3d at 773 (the district court must “view the evidence in a light most favorable to the nonmovant and draw all reasonable inferences in its favor, ... and ... resolve all doubt over factual issues in favor of the party opposing summary judgment,” quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.Cir.1985) (in banc)); Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d at 1274; Comair Rotron, Inc., 49 F.3d at 1536 (“The evidence provided by the nonmovant is to be believed, and all justifiable inferences are to be drawn in the nonmovant’s favor.”); Keystone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.Cir.1993).
The party seeking summary judgment “‘always bears the initial responsibility of informing the district court of the basis for its motion.’” Glaverbel, 45 F.3d at 1560 (quoting Celotex, 477 U.S. at 324, 106 S.Ct. at 2553); Conroy, 14 F.3d at 1575; Copelands’ Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 1565 (Fed.Cir.1991). The moving party must “ ‘identify[ ] those portions of “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,” which it believes demonstrate the absence of a genuine issue of material fact.’ ” Glaverbel, 45 F.3d at 1560 (quoting Celotex, 477 U.S. at 324, 106 S.Ct. at 2553, which in turn cites Fed.R.Civ.P. 56(c)); Conroy, 14 F.3d at 1575 (“The moving party, however, need not produce evidence showing the absence of a genuine issue of material fact but rather discharge^] its burden by showing the district court that there is an absence of evidence to support the nonmov-ing party’s case.”).
In response, “ ‘the nonmoving party [must] go beyond the pleadings and by [its] own affidavits, or by the “depositions, answers to interrogatories, and admissions on file,” designate “specific facts showing that there is a genuine issue for trial.” ’ ” Glaverbel, 45 F.3d at 1560 (quoting Celotex, 477 U.S. at 324, 106 S.Ct. at 2553). A material fact is one that may affect the decision, so that the finding of fact is relevant to the proceedings. Anderson, 477 U.S. at 248, 106 S.Ct. at 2510; Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1196 (Fed.Cir.1994), cert. denied, — U.S. —, 115 S.Ct. 1356, 131 L.Ed.2d 214 (1995); Keystone Retaining Wall, 997 F.2d at 1449 (“A material fact is one that may affect the decision, whereby the finding of that fact is relevant and necessary to the proceedings,” citing Anderson, 477 U.S. at 248, 106 S.Ct. at 2510). An issue of material fact is genuine if it has a real basis in the record. Matsushita, 475 U.S. at 586-87, 106 S.Ct. at 1355-56. “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986); Stark v. Advanced Magnetics, Inc., 29 F.3d 1570, 1572 (Fed.Cir.1995) (“When material facts are in dispute summary adjudication may nonetheless be appropriate if, with all factual inferences drawn in favor of the non-movant, the movant would nonetheless be entitled to judgment as a matter of law.”); Tone Bros., 28 F.3d at 1196 (“The court must bear in mind the actual quantum and quality of proof necessary to support liability under the applicable law.”); Continental Can, 948 F.2d at 1265. The correct law must, of course, be applied, whether to undisputed facts or to disputed facts viewed favorably to the non-movant. Stark, 29 F.3d at 1573.
When the movant’s burden of establishing the lack of a genuine issue of material fact has been met “in facial terms,” the nonmov-ant must point to “some evidence in the record sufficient to suggest that [the non-movant’s] view of the issue might be adopted by a reasonable factfinder.” Id. at 1560-61. Although “direct proof is not required to create a jury question, ... to avoid summary judgment, ‘the facts and circumstances relied upon must attain the dignity of substantial evidence and must not be such as merely to create a suspicion.’ ” Metge v. Baehler, 762 F.2d 621, 625 (8th Cir.1985) (quoting Impro Products, Inc. v. Herrick, 715 F.2d 1267, 1272 (8th Cir.1983), cert. denied, 465 U.S. 1026, 104 S.Ct. 1282, 79 L.Ed.2d 686 (1984)), cert. denied sub nom. Metge v. Bankers Trust Co., 474 U.S. 1057, 106 S.Ct. 798, 88 L.Ed.2d 774 (1986). “[S]ummary judgment may be granted when no ‘reasonable jury could return a verdict for the nonmoving party.’ ” Nike, Inc., 43 F.3d at 646 (quoting Anderson, 477 U.S. at 248, 106 S.Ct. at 2510); see also Anderson, 477 U.S. at 248, 106 S.Ct. at 2510 (The necessary proof that the non-moving party must produce is not precisely measurable, but the evidence must be “such that a reasonable jury could return a verdict for the nonmoving party.”); Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d at 1274 (also citing Anderson); Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1196 (Fed.Cir.1994); Tone Bros., 28 F.3d at 1196 (“The court must assess the adequacy of the non-movant’s response and must determine whether the showing the nonmovant asserts it will make at trial would be sufficient to carry its burden of proof.”); Keystone Retaining Wall, 997 F.2d at 1449 (sufficient evidence must be presented that a reasonable fact finder could decide the question in the nonmovant’s favor). With these standards in mind, the court turns to consideration of the parties’ cross-motions for summary judgment.
III. FINDINGS OF FACT
A Undisputed Facts
Defendant Nordberg is the owner of U.S. Patent No. 4,697,745, called the ’745 patent in these proceedings, which is entitled “Method And Apparatus For High Performance Conical Crushing,” issued October 6, 1987. Although the title of the patent indicates that it is for both a method and an apparatus, the apparatus claims were cancelled from the application for the ’745 patent, although they were later issued as a separate patent not at issue here. As granted, the ’745 patent contains only “method” claims.
“Conical crushers,” to which the ’745 patent pertains, crush a variety of materials for a variety of purposes. For example, conical crushers are used to crush rock, brick, and concrete for various commercial purposes, including asphalt paving. They are also used to crush iron ore for iron production, sand for glass, and even rock for recovery of gemstones. In simple terms, such crushers consist of an inverted bowl over a conical crusher head that gyrates, rather than rotates, thus crushing rock between the gyrating head and the lining of the bowl. Rock or other material is fed into the top of the crusher. It is then crushed by the gyrating head, and crushed material of a desired diameter is removed from the bottom of the machine. Crushers are mounted either on “permanent” foundations or on “portable” foundations, such as truck beds. Operation of a crusher usually involves other equipment, including conveyors and screens, and this equipment and the foundation or truck bed on which the crusher is mounted must be made to accommodate the size of the crusher. Because increased production in the industry was generally obtained by buying a larger diameter crusher, with consequent reconfiguration of other equipment and related expenses, a method of increasing production with a crusher of similar proportions obviating those reconfigurations and related expenses, was of recognized benefit to the crusher industry.
Conical crushers have remained remarkably consistent in design since the 1920s. There are, however, two kinds of conical crushers. The first kind, made today primarily by the Allis-Chalmers company, has a relatively tall cone and short throw. The second, based on a patent issued to Edgar B. Symons in 1925, and therefore sometimes called a Symons crusher, has a relatively “flat” head, runs at a higher speed, and has a longer throw when compared to the Allis-Chalmers design. Nordberg’s predecessor company became the licensee of the Symons patent in the 1920s.
It is recognized in the crusher industry that crusher performance, in terms of tons per hour of crushed material produced, is affected by variations in the speed, throw, power draw, crusher setting, feed size, feed type, including its hardness and moisture content, ambient operational temperature, and other variables. The variables at issue in this litigation are the “speed” and “throw” of the crusher. “Speed” means the speed at which the head gyrates. “Throw” compares the smallest and largest distances between the head and the liner of the crusher as the head gyrates. Crusher “setting” is the height of the head relative to the bowl, thus determining the maximum size of the feed material.
The ’745 patent was a product of Nord-berg’s test program, which commenced in 1973 and was discontinued in 1985. Dissatisfied with conducting crusher performance evaluations at customers’ facilities, Nordberg began a study program at its Mineral Research and Test Center located in Milwaukee, Wisconsin, where the variables of crusher performance could be systematically evaluated in controlled conditions. Nordberg’s testing program revealed that increased productivity could be obtained from a crusher without changing its size, but instead by changing its speed and throw in combination. The application for the ’745 patent followed in 1986.
Nordberg originally applied for the ’745 patent on February 24, 1986. Claims 13, 19, 21, and 25 of the patent application are the predecessors of Claims 1, 9, 11, and 15 of the ’745 patent as issued. These claims are so-called “independent” claims, and all other claims in the patent are dependent from one of these four independent claims. Only infringement, and hence the validity, of Claim 1, however, is at issue in these proceedings. The prosecution history of the ’745 patent reveals that the examiner twice rejected all remaining claims on grounds of indefiniteness for failing to particularly point out and distinctly claim the subject matter which the applicants regarded as their invention, once on November 17,1986, and again on April 24, 1987. However, the patent was ultimately issued on October 6, 1987.
The pertinent provision of the ’745 patent for this litigation is Claim 1, which states as follows:
What is claimed is:
1. A method for increasing the productivity of a conical crusher for comminuting a volume of material over unit time, said crusher having a fixed outer configuration, a fixed bowl liner having a maximum diameter, a specific volumetric capacity, a conical head with a specified diameter and gyrating within said bowl liner at a specified throw, said head also having a specified gyrational speed and power draw, and said crusher having a specified setting or gap between said bowl liner and said head, with the crushing action taking place when the gyrating head moves toward the bowl liner, said method comprising:
increasing said throw of said head over the specified throw; and
increasing said gyrational speed over the specified speed.
Claim 1 has seven dependent claims, which further explain the claimed invention:
2. The method defined in claim 1 comprising replacing said head with a head having a diameter on the order of 10% greater than said specified head diameter.
3. The method defined in claim 1 comprising increasing said throw of said head on the order of 40% over said specified throw.
4. The method defined in claim 1 comprising replacing said bowl liner with a bowl liner having a volumetric capacity on the order of 20% greater than said specified volumetric capacity.
5. The method defined in claim 1 comprising increasing said power draw on the order of 100% over said specified power draw.
6. The method defined in claim 5 wherein said increased power draw is on the order of 1,000 HP.
7. The method claimed in claim 1 comprising replacing said head with a head having a larger maximum diameter and replacing said bowl liner with a liner having a larger corresponding diameter without changing the size of said outer configuration of said crusher.
8. The method defined in claim 1 further comprising replacing said bowl liner with a bowl liner having a volumetric capacity greater than said specified capacity.
In prosecuting its patent application, Nordberg disclosed four prior art references, including two patents to Davis, one to Vroom, and an undated publication by Allis-Chalmers entitled “Hydrocone Crushers 22 to 84 Inch.” Nordberg asserted that none of these prior art references disclosed the invention identified in its application.
Nordberg asserts that it used the method stated in the ’745 patent to produce a new conical crusher, its model HP300, which enjoyed approximately a 30% increase in productivity over Nordberg’s prior crusher of comparable size, which had been known as the Omnicone. The HP300 was introduced in 1990 and enjoyed considerable market success. Four times as many HP300s were sold during its first year of production as had been sold of its predecessor, the Omnicone, during its first year.
Cedarapids became aware of the ’745 patent in 1989. Cedarapids had been manufacturing a conical crusher, known as the Roll-ercone Classic, in 36, 45, 54, 60, and 66 inch sizes since the late 1950s. However, in 1989, an applications engineer for the El-Jay division of Cedarapids named Robert Gemmel reviewed the ’745 patent, and recognized that it posed a possible threat to the Rollercone Classic. In a memorandum dated November 7, 1989, Gemmed stated, “It appears that Nordberg is putting us on the run.” He then provided his analysis of the ’745 patent and the likely resulting Nordberg conical crusher, and proposed production of a Cedarapids crusher based on similar principles. In early 1990, Cedarapids became aware of the Nord-berg HP300 at a trade fair, and Cedarapids engineers associated the HP300 with the ’745 patent. Cedarapids prepared to respond to the competition provided by the HP300 by developing in March of 1990 a marketing plan for its own “supercone” crusher, called the Rollercone II, which was intended to “feature[] a significant increase in production that is related to length of stroke and added horsepower,” and was intended, in part to “[cjounter Nordberg’s competitive threat — HP300.” Rollercone II Marketing Plan, March 1990, Executive Summary, Defendant’s Exhibit 14. Cedarapids then undertook its own test of performance variables for conical crushers between June and November 1990 at a customer’s facility in Oregon known as Wildish. These tests focused on the effect of changes in speed and stroke length, or throw. Testing continued into 1992. Cedarapids engineers concluded that increased production could be obtained without changing the size of the crusher by increasing the throw, steepening the chamber angle, increasing the speed, and providing sufficient power.
Cedarapids concluded that it would not introduce modifications to existing machines to allow them to operate with a longer throw, because company officials believed that such modified machines would be prone to structural failures and because they believed such a course would be an inappropriate marketing strategy. Cedarapids therefore incorporated the changes suggested by testing into a new crusher model, called the Rollercone II, which had a faster speed and increased throw relative to Rollercone Classic machines of identical sizes. Rollercone II machines demonstrated an increase in productivity of approximately 30% over the comparably sized Rollercone Classic machines. Cedara-pids introduced the Rollercone II line of crushers in 1992 and 1993. Because Roller-cone II machines had nearly identical outer proportions to Rollercone Classic machines of comparable sizes, they could replace Roller-cone Classic machines on existing foundations without adjustments or reconfiguration of other hardware.
By certified letter dated March 2, 1993, Nordberg notified Cedarapids that a 54-inch cone crusher manufactured by Cedarapids’s El-Jay division was allegedly infringing Nordberg’s ’745 patent. Cedarapids then filed this lawsuit in the United States District Court for the District of Oregon on March 15, 1993, seeking declaratory judgment that Cedarapids is not infringing the ’745 patent and that the patent in question is invalid. Cross motions for summary judgment followed.
B. Disputed Facts
Cedarapids acknowledges that there are disputes of fact between the parties, and asserted at oral arguments that it could produce evidence to generate such disputes, but Cedarapids contends that there are no genuine issues of material facts precluding summary judgment in its favor that the ’745 patent is invalid and not infringed. Nord-berg asserts that there are genuine issues of material fact precluding summary judgment in Cedarapids’s favor, but none precluding summary judgment in Nordberg’s favor. The court will therefore survey the disputes of fact apparent from the record and asserted by the parties, leaving for discussion in the appropriate place the degree to which these disputes are material to the disposition of the motions for summary judgment.
Cedarapids contends that Nordberg did not disclose a number of prior art references that would have demonstrated the unpatenta-bility of the ’745 patent. The first of these is the Symons patent of 1925, which stated that the invention consisted of a conical crusher that obtained increased productivity by increasing speed and throw. Cedarapids next points to a brochure dating from the 1920s promoting Nordberg’s “Symons” crushers, which states that the “new crushing process” is “similar to that of the ordinary gyratory [crusher], with the exception that it moves at least five times as great a distance and gyrates faster.” Defendant’s Exhibit 32, p. 8. Cedarapids contends that this reference demonstrates that the modifications for which Nordberg obtained a patent in 1987 were known in the 1920s. Nordberg contends that the comparison identified in both the Symons patent and the Nordberg brochure is not to an existing Symons crusher, but to a “traditional” gyratory crusher now exemplified by the Allis-Chalmers model and used almost exclusively for primary crushing. Nordberg contends that these references do no more than suggest that speed and throw are relevant to increased productivity, but that these prior references do not answer the questions of the interrelationship of these variables, which Nordberg asserts are addressed in the ’745 patent.
Cedarapids next nominates as prior art anticipating or rendering obvious the ’745 patent another brochure, this time from the 1970s, also by Nordberg, which states that
[t]he outstanding feature of the Symons Cone is its high productivity — delivering large tonnage of crushed product to desired specifications. Principally responsible for this large relative output is the Symons process of crushing. A combination of high speed gyration and wide travel of the crushing head results in a relatively free flow of materials through the crusher, a series of rapid hammer-like impacts on the material as it passes through, and rapid discharge of the crushed product.
Plaintiffs Exhibit 8, p. 8. Nordberg insists that this and the prior reference are cumulative of the Symons patent itself, and that all compare Symons cone crushers to the other form of the traditional cone crusher, rather than suggesting further development of the Symons cone, as taught by the ’745 patent.
Finally, Cedarapids points to the “Sawant Paper,” by one of the co-inventors of the ’745 patent. Plaintiffs Brief In Resistance To Defendant’s Motion For Summary Judgment, Exhibit B (hereinafter “Exhibit B”). In this paper, written in 1984, Sawant states,
The effects of varying the head throw and head speed on the productivity of the crusher are significant with setting held constant.... [From test results,] [i]t is obvious that a crusher with a larger throw and speed capabilities is more efficient and therefore cost effective.
Exhibit B, p. 3-4. Cedarapids contends that more than a year before the patent application was filed, the variables identified in the ’745 patent had been discussed as producing the desired results when interrelated as suggested by the patent. Nordberg contends that the Sawant Paper only identifies speed and throw among a number of other variables, any of which can affect crusher performance, but does not establish the interrelationships between speed and throw articulated in the ’745 patent.
Cedarapids points out that none of these prior art references was presented to the Examiner, but that a brochure produced by the Allis-Chalmers company was. Nord-berg’s citation of this brochure as prior art states that it
discloses the concept of adjusting the capacity of conical crushers by increasing throw, increasing Hp and increasing eccentric speed. It should be noted that the Allis-Chalmers crusher is designed to operate at a maximum of 500 Hp.
Plaintiffs Exhibit 2A, Information Disclosure Statement, pp. 1-2. This brochure, dating from about 1970, states that for maximum product output, the Allis-Chalmers Hydro-cone crushers use large eccentric throw:
Overall crusher performance characteristics, including speed and horsepower, influence throw selection. Greater horsepower capability of HYDROCONE crushers means that larger throws can be applied than otherwise — and increasing throw means a definite increase in tons per hour of product passing a screen size. Larger throws — and higher capacities — are characteristic of HYDROCONE crushers. The result? A lot more saleable product because crusher capability can be used to its fullest extent.
Plaintiff’s Exhibit 2A, Allis-Chalmers brochure, p. 9. Cedarapids argues that this disclosure also identifies the known relationship between speed and throw. Nordberg contends that all of the omitted references are cumulative of the teaching of the Allis-Chalmers brochure, which does not demonstrate the interrelationship of speed and throw taught by the ’745 patent.
For its part, Nordberg has nominated a prior art reference as “teaching away” from the invention embodied in the ’745 patent. In a particle breakage study produced by personnel employed by Allis-Chalmers, dated 1981, the authors discounted the impact of throw on increased crusher capacity:
(5) It is a claim of some designs of cone crushers that the eccentric throw has some mystical influence on the capacity and size distribution produced by a particular machine. The pendulum tests supported by field observations prove conclusively that reduction and size distribution of products are simply related to the energy applied to the material. For a fixed application of power, increasing eccentric throw will reduce the force available to crush. This lowers the available power rate and, hence, the reduction ratio. The size distribution appears to be independent of the number of impacts causing this energy application.
Defendant’s Exhibit 29, p. 19.
Nordberg asserts that there are genuine issues of material fact as to the extent to which Cedarapids’s own engineers associated the HP300 with the ’745 patent or recognized it as an embodiment of the patent. Nord-berg also asserts that there are genuine issues of material fact as to the reasons Cedar-apids conducted its own tests of the crusher performance variables identified in the ’745 patent. Nordberg insists that the reason was that Cedarapids employees did not believe the teaching of the ’745 patent, and therefore the patent’s teachings were not anticipated or obvious. Cedarapids contends that its reasons for testing were irrelevant, but, in any event, were because the ’745 patent left so much unexplained that Cedara-pids could not tell the scope of the claimed invention nor make and use a device based on the patent. The parties dispute the extent and expense of the testing Cedarapids undertook in response to the ’745 patent. Cedarapids asserts that it expended over two years and approximately $2 million in developing the design of the Rollereone II, and therefore the ’745 patent could not be properly enabling. Nordberg counters that Ce-darapids spent no more than about $12,000 in running its tests to confirm the teachings of the ’745 patent. Nordberg also asserts that Cedarapids employees had no difficulty understanding the patent, although they now state to the contrary. Further, Nordberg alleges that, contrary to Cedarapids’s contentions, conical crushers typically have a specified speed and throw, and that the Roller-cone II can be recognized as a “retrofit” of a Rollereone Classic with increases from the specified speed and throw of the older model. Nordberg specifically alleges that Cedara-pids used the ’745 patent in the development of the Rollereone II, although Cedarapids asserts that the Rollereone II was the result of its own independent research and development.
Many of the other disputes of “fact” asserted by the parties are more properly disputes over the legal inferences to be drawn from the facts, and the court will not catalogue those differences of opinion here. The court will determine below the extent to which the disputes of fact identified by the parties and other factual disputes apparent from the record are material to the disposition of this matter. See Fed.R.Civ.P. 56(c); Anderson, 477 U.S. at 248, 106 S.Ct. at 2510; Matsushita Elec. Indus. Co., 475 U.S. at 586-87, 106 S.Ct. at 1355-56; Tone Bros., 28 F.3d at 1196; Keystone Retaining Wall, 997 F.2d at 1449. The court therefore turns consideration of the parties’ arguments concerning validity and infringement of the ’745 patent.
IV. LEGAL ANALYSIS
(Including Some Ultimate Findings Of Fact)
Because both parties argue essentially the same issues in their cross-motions for summary judgment and respective resistances, the court will not make any distinction here between the cross-motions for summary judgment until and unless it determines that one party or the other has failed in its burden to generate a genuine issue of material fact precluding summary judgment. The court turns first to issues of validity or invalidity, then to issues of infringement.
A Invalidity
The court’s analysis begins with challenges to and assertions of the validity of the ’745 patent, because if the patent is invalid, infringement becomes a moot issue. Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 879 (Fed.Cir.1993) (because the court of appeals affirmed the district court’s determination of invalidity, it did not reach the district court’s infringement determination), cert. denied, — U.S. -, 114 S.Ct. 943, 127 L.Ed.2d 232 (1994). However, the Supreme Court has directed that courts generally rule on validity issues even if the court determines that the patents were not infringed. Cardinal Chem. Co. v. Morton Int'l, Inc., — U.S. -, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993); see also Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1562 (Fed.Cir.1993) (noting this requirement), cert. denied, — U.S. -, 114 S.Ct. 1540, 128 L.Ed.2d 192 (1994). Also, because either the validity or infringement determination may be separately dispositive of this case, the court will undertake to determine both the validity and infringement questions here. The invalidity or validity issue has two principal prongs here: (1) whether the ’745 patent was too indefinite or lacked the necessary “enablement” to be valid under 35 U.S.C. § 112; and (2) whether the ’745 patent was anticipated or obvious under prior art pursuant to 35 U.S.C. §§ 102 and 103.
Under 35 U.S.C. § 282, a patent is presumed valid, and the party challenging validity has the burden of proving facts by clear and convincing evidence showing that the patent is invalid. North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1579 (Fed.Cir.1993) (citing Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed.Cir.1988)), cert. denied, — U.S. -, 114 S.Ct. 1645, 128 L.Ed.2d 365 (1994); Morton Int’l, Inc. v. Cardinal Chemical Co., 5 F.3d 1464, 1469 (Fed.Cir.1993); see also Mendenhall, 5 F.3d at 1564 (upholding jury instruction on presumption of validity of a patent stated in terms of “deference to be given the Patent Office’s determination,” which required the jury to compare the evidence before the Patent Office with that before the jury before deciding what weight to give the Patent Office’s determination); Intel Corp. v. United States Trade Comm’n, 946 F.2d 821, 829 (Fed.Cir.1991) (validity of a patent is presumed under § 282, and invalidity must be proved by clear and convincing evidence); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed.Cir.1986) (hereinafter “Hybritech I ”), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987). It is “axiomatic” that the claims define the invention which an applicant believes is patentable. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.Cir.1993) (citing eases to so hold). In the patentability context, claims are to be given their “broadest reasonable interpretation.” Id. Furthermore, limitations are not to be read into claims from the specification. Id. The court turns to whether Cedarapids has demonstrated the invalidity of the ’745 patent sufficiently to be entitled to summary judgment.
1. Enablement and defíniteness
Title 35 U.S.C. § 112 contains two requirements at issue here for the validity of a patent. The first unnumbered paragraph establishes the so-called “enablement” requirement. It states as follows:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out [the inventor’s] invention.
35 U.S.C. § 112; Morton Int’l v. Cardinal Chemical Co., 5 F.3d 1464, 1469 (Fed.Cir.1993). The second unnumbered paragraph of 35 U.S.C. § 112 contains the so-called “definiteness” requirement:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the applicant’s] invention.
Id.; see also North Am. Vaccine, 7 F.3d at 1578 (definiteness requirement is found in second paragraph of § 112); Morton Int’l, 5 F.3d at 1469-70 (considering these two requirements separately); Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 874 (Fed.Cir.1993) (definiteness requirement is in § 112, ¶ 2); Stiftung v. Renishaw PLC, 945 F.2d 1173, 1181 (Fed.Cir.1991) (“definiteness” requirement is found in § 112, ¶ 2). It appears that the distinction between the two requirements is that between “utilization” of the invention, which relates to enablement, and “scope” of the invention, which goes to its definiteness. See, e.g., Morton Int’l, Inc., 5 F.3d at 1469-70; Hybritech I, 802 F.2d at 1384-85 (distinguishing between enablement and definiteness on the basis that the first requires that a patent enable one skilled in the art to make and use the invention, and the second requires that the patent apprise those skilled in the art as to what is claimed as the invention).
Although enablement and definiteness are separate and distinct requirements, Hybritech, Inc. v. Abbott Lab., 849 F.2d 1446, 1453 (Fed.Cir.1988) (hereinafter “Hybritech II”), courts have long recognized the necessity of both requirements being met:
The law is clear that “‘[i]f the claims, read in the light of the specification[s], reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the courts can demand no more.’ ” Shatterproof Glass Corp. v. Libbey-Owens Ford, Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.Cir.), cert. dismissed, 474 U.S. 976, 106 S.Ct. 340, 88 L.Ed.2d 326 (1985) (quoting Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 136, 118 USPQ 122, 132 (2d Cir.), cert. denied, 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112 (1958)).
North Am. Vaccine, 7 F.3d at 1579-80; Miles Lab., 997 F.2d at 875 (stating that “[i]f the claims read in the light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more,” but still considering both whether the “patent disclosed adequate information to enable a skilled artisan to make and use the claimed invention,” pursuant to § 112, ¶ 1, and whether “the claims read in light of the specification reasonably apprise[d] those skilled in the art of the claimed invention.”). Indeed, in Hybritech II, the court found that the same evidence supported the court’s conclusion that both requirements had been met. Hybritech II, 849 F.2d at 1453. In Hybritech II, the patent in suit was for diagnostic kits for antibodies indicating certain physical conditions, such as pregnancy, cancer, growth hormone deficiency, or hepatitis. Id. at 1448. In the context of litigation of a request for a preliminary injunction, the court held that the district court’s findings that “most everybody used the [specified] method to determine affinity constants” sufficed to establish both enablement and definiteness under the first and second paragraphs of § 112. Id. at 1453.
a. Enablement
In Morton Int’l, Inc., the court considered the question of “enablement” first, finding that the party asserting lack of en-ablement must prove by clear and convincing evidence facts establishing a lack of enablement. Morton Int’l, Inc., 5 F.3d at 1469. However, lack of enablement is reviewed as a question of law. Id.; In re Wright, 999 F.2d 1557, 1561 (Fed.Cir.1993) (“As a statutory requirement, enablement is a question of law that we review de novo; however, we review for clear error any underlying facts found by the Board in rendering its enablement determination.”); Fiers v. Revel, 984 F.2d 1164, 1171 (Fed.Cir.1993); In re Vaeck, 947 F.2d 488, 495 (Fed.Cir.1991); Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1212 (Fed.Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991); In re Wands, 858 F.2d 731, 735 (Fed.Cir.1988). A genuine issue of material fact may nonetheless preclude summary judgment of lack of enablement as a matter of law. See Hormone Research Found., Inc. v. Genentech, Inc., 904 F.2d 1558, 1568 (Fed.Cir.1990) (genuine issues of material fact precluded summary judgment on question of enablement), cert. dismissed, 499 U.S. 955, 111 S.Ct. 1434, 113 L.Ed.2d 485 (1991). Nothing more than objective enablement is required, and therefore it is irrelevant whether the teaching of the patent is provided through broad terminology or illustrative examples. In re Wright, 999 F.2d at 1561.
The focus of the enablement requirement in Morton Int’l, Inc., was whether the invention was described with sufficient exactness to “enable any person skilled in the art ... to make and use the same.” Morton Int’l, Inc., 5 F.3d at 1469; Fiers, 984 F.2d at 1171. However, enablement is determined by reference to the state of the art at the time of the patent application, rather than at some later time. Wright, 999 F.2d at 1562. Therefore, the fact that experimentation would not be necessary at the time of the challenge to the patent, because of work in the art occurring after the patent application, does not mean that the patent was properly enabled at the time it was issued. Id. at 1561-62. In Morton Int’l, Inc., the court found that the lack of enablement had been proved as required, because using the patented process, the claimed compounds were not produced. Morton Int’l, 5 F.3d at 1469; see also North Am. Vaccine, 7 F.3d at 1579 (fact that utilization of patent process might result in products that do not meet the objects of the invention “goes to ... lack of enablement under 35 U.S.C. § 112, first paragraph,” not to definiteness); Amgen, 927 F.2d at 1212.
The court’s discussion of the manner in which the defendant in Morton Int’l, Inc., proved a lack of enablement is instructive on the differences between enablement and definiteness and on the question of whether or not the patent in suit here meets the enablement requirement:
The specification purports to teach, with over fifty examples, the preparation of the claimed compounds with the required connectivity. However, the district court found that
[ejven with the aid of sophisticated analytical instrumentation and the use of model systems which attempt to provide the compounds claimed in the ’881 patent, however, there is no evidence that such compounds exist. The clear and convincing evidence has shown that the examples of the ’881 patent do not produce the postulated compounds. Rather, the examples and procedures produce a complex mixture of alkyltin mer-captides and alkyltin sulfides. The evidence established that a number of these are prior art compounds known to be useful as heat stabilizers.
These findings are supported by the record. On review of the record, there is considerable evidence showing that those skilled in the art could not make the claimed compounds using the procedures of the specification, and no evidence that such compounds even exist. The fifty-odd examples in the patent obviously teach something, but the evidence shows that they did not teach what was allegedly defined in the claims. Because ... clear and convincing evidence [produced by the party asserting lack of enablement] was not rebutted by [the patentee], such as by showing that the examples do indeed produce the compounds containing the claimed connectivity, we see no error in the district court’s determination.
Morton Int'l, Inc., 5 F.3d at 1469-70. This discussion makes clear the manner in which “utilization” goes to enablement, because the inability of those familiar with the art to utilize the invention to produce the claimed product demonstrated the lack of enablement of the patent.
In Wright, the court found that the patent was not enabling to the full extent of the claim or even to the extent of a more limited claim. Wright, 999 F.2d at 1561 (“Although not explicitly stated in section 112, to be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation,’ ” quoting Vaeck, 947 F.2d at 495). The court found that the patent was not sufficiently enabling, because it purportedly taught a process for producing a variety of vaccines, but the specification taught the process only for a single strain of a single virus, and did not account for adjustments to the process necessary for other variables present with other viruses. Id. at 1562. Rather, undue experimentation would be required to apply the process to other viruses. Id. Similarly, in In re Goodman, the court found that a patent claim was not sufficiently enabling, because the patent did not contain sufficient information to enable the broad scope of the claims. In re Goodman, 11 F.3d 1046, 1050 (Fed.Cir.1993). In Goodman, the court found that the sole example teaching the method in the patent would not enable a person skilled in the art to “produce any type of mammalian protein in any type of plant cell,” and no supporting authority could dispel the uncertainties about how the method could be applied to produce the intended product. Id. at 1050-51. The court found that the prior art and the inventor’s own learned paper demonstrated “the need for extensive experimentation to practice the claimed method” for just a few examples, let alone for all possible examples, as the patent application broadly claimed. Id. at 1052.
The concerns with the scope of enablement and the degree of experimentation necessary to apply the teachings of the patent are also apparent in Amgen:
That some experimentation is necessary does not constitute lack of enablement; the amount of experimentation, however, must not be unduly extensive. The essential question here is whether the scope of the enablement of [the] claim ... is as broad as the scope of the claim....
[I]t is not necessary that a patent applicant test all the embodiments of his invention; what is necessary is that he provide a disclosure sufficient to enable one skilled in the art to carry out the invention commensurate with the scope of his claims.
Amgen, 927 F.2d at 1212-13 (internal citations omitted); see also Fiers, 984 F.2d at 1171-72 (“ ‘[A] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support,’” quoting In re Marzocchi, 439 F.2d 220, 223 (C.C.P.A.1971)); In re Vaeck, 947 F.2d at 495 (§ 112 requires that scope of the claims bear a reasonable correlation to the scope of en-ablement provided by the specification). However, a patent is not intended to be a production specification. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed.Cir.) (“It is not fatal if some experimentation is needed, for the patent document is not intended to be a production specification.”), cert. denied, 498 U.S. 920, 111 S.Ct. 296, 112 L.Ed.2d 250 (1990). Thus, the fact that Cedarapids technicians had to do some amount of experimentation to develop the Rollercone II or to test the Nordberg patent does not necessarily establish lack of enablement of the ’745 patent; rather, the question is whether the degree of experimentation Cedarapids technicians had to do was “unduly extensive.” Amgen, 927 F.2d at 1212-13; Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1571 (Fed.Cir.1991) (“The purpose of this provision [§ 112, ¶ 1] is to assure that the inventor provides sufficient information about the claimed invention that a person of skill in the field of the invention can make and use it without undue experimentation, relying on the patent specification and the knowledge in the art.”); Northern Telecom, 908 F.2d at 941.
In Genentech, Inc., the court addressed more directly what constitutes undue experimentation. Genentech, Inc., 29 F.3d at 1564. In that case, the court held that a patented process involving recombinant DNA technology to produce certain proteins lacked the necessary enablement, because it found that the determination of which permutations of DNA produced operative proteins required “an undue amount of experimentation.” Id. The court found that defendants had “expended a significant amount of effort — $20 million and 130 man-years — to develop [the allegedly infringing product] notwithstanding the prior work that led to the filing of the [patents in suit].” Id. at 1564 n. 24.
Cedarapids asserts that the ’745 patent is not sufficiently enabling for a number of reasons. Cedarapids argues that the patent provides insufficient information about how much the speed and throw of the crusher are to be increased, from what beginning point or starting settings these increases are to be made, and the limits of the possible increases before returns diminish rather than increase, and, most importantly, precisely what is the combination of these variables to obtain increased productivity. Cedarapids also asserts that the necessity for its extensive experimentation in order to make changes to speed and throw work effectively demonstrates that the ’745 patent was not sufficiently enabling. At oral arguments, Nord-berg asserted that the invention was not how much any variables were to be increased, but the fact that both speed and throw should be increased simultaneously, and that the patent teaches with sufficient clarity how to use the process for improving productivity without stating specific numbers. However, Nordberg also points out that the specification of the patent states that throw can be increased by as much as 40% and speed can be increased as much as 100% over standard settings for a 7-foot crusher. Nordberg also disputed the extent and cost of the experimentation Cedarapids undertook to learn to use the teachings of the patent.
The court finds that there is an underlying factual dispute as to the amount of experimentation Cedarapids actually had to undertake that is material to determination of whether or not the patent in suit is sufficiently enabling. Morton Int’l, Inc., 5 F.3d at 1469; In re Wright, 999 F.2d at 1561; Fiers, 984 F.2d at 1171; Amgen, Inc., 927 F.2d at 1212; In re Wands, 858 F.2d at 735. Such a factual dispute could preclude summary judgment on the enablement issue as a matter of law were it the only ground upon which the court could make its enablement determination. Hormone Research, 904 F.2d at 1568. If it was necessary for Cedarapids to invest two years and $2 million into experimentation to make the ’745 patent work, as Cedarapids asserts, that amount of experimentation could indeed be “undue.” See Genentech, 29 F.3d at 1564 & n. 24. On the other hand, if it was only necessary for Cedarapids to make relatively few tests at a cost of only $12,000 to verify the teachings of the ’745 patent and to develop from the patent an effective design for a high productivity crusher, such as the Rollercone II, as Nordberg asserts, that degree of experimentation would not be “undue,” because a patent is not intended to be a production specification. See Northern Telecom, 908 F.2d at 941.
However, in order to preclude summary judgment, a factual dispute must be material to the disposition of the issue under the applicable law. Anderson, 477 U.S. at 248; Tone Bros., Inc., 28 F.3d at 1196; Keystone Retaining Wall, 997 F.2d at 1449; Stark, 29 F.3d at 1572; Continental Can, 948 F.2d at 1265. The applicable law here requires the court to determine whether the invention was described with sufficient exactness to “enable any person skilled in the art ... to make and use the same.” Morton Int’l, Inc., 5 F.3d at 1469; Fiers, 984 F.2d at 1171. In this case, the court finds that the enablement issue may be disposed of regardless of the degree to which C